Opposition by Biodental Remin Ltd. to applications under section 92 of the Trade Marks Act 1995 (Cth) by Biodental Industries Pty Ltd for removal of trade marks numbered 1316708 (3,5,30) – anticay and 1642434...

[2021] ATMO 70

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Biodental Remin Ltd. to applications under section 92 of the Trade Marks Act1995 (Cth) by Biodental Industries Pty Ltd for removal of trade marks numbered 1316708 (3,5,30) – anticay and 1642434 (3,5,30) – ANTICAY – both in the name of Biodental Remin Ltd. 

Delegate:	Nicholas Smith
Representation:	Opponent: Gadens Lawyers Applicant: Edward Thompson of Counsel instructed by Michelle Gorton of Gorton IP
Decision:	2021 ATMO 70 Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(b) application for removal - Removal Opponent’s evidence does not show use of the Trade Marks during the relevant period or obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Marks to be removed from the Register

Background

1. This decision is made pursuant to two applications made on 26 August 2019 under s 92(4)(b) of the Trade Marks Act 1995 (‘Act’) by Biodental Industries Pty Ltd (‘Applicant’) to remove the trade marks detailed below (‘Trade Marks’) from the Register of Trade Marks.  The applications were made in respect of all of the goods for which the Trade Marks are registered, that is, the applications  are for complete removal of the Trade Marks for all the goods for which they are registered (collectively ‘Registered Goods’).

Registration No.

1316708

Lodgement date

24 August 2009

Goods

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressing; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice

Owner

Biodental Remin Ltd.

Trade Mark

anticay

Registration No.

1642434

Lodgement date

21 August 2014

Goods

Class 3: Cleaning, polishing, scouring and abrasive preparations; oral care preparations; dentifrices, non-medicated mouthwash and dental rinses, breath freshener, toothpaste (medical and non-medical); dental bleaching gels; dental care preparations (non-medicated); dental rinses, non medicated; non-medicated dental preparations; products for dental hygiene; rinses to prevent dental caries; tartar colouring tablets for use in dental hygiene; perfumery, essential oils; body care preparations; non-medicated preparations for the care of the body, hair and skin; soaps, cosmetics, body lotions, hair lotions, creams, gels, lotions, oils, balsams, powders, talcum powders and sprays for use on the body and skin; non-medicated preparations for the treatment, care, cleansing, soothing, revitalising and relaxing of the body, hair and skin; skincare preparations; personal hygiene products in this class; toiletries; deodorants and anti-perspirants for personal use; sunscreen preparations; sun-tanning preparations

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides; pharmaceutical preparations containing fluoride; abrasive fluids for dental use; abrasive materials for dental use (other than floss); abrasive media for dental use (other than floss); abrasive pads for dental purposes; abrasive paste for dental use; abrasive powder for dental use; adhesion promoters for dental use; adhesive cements for dental use; adhesive compositions for dental use; adhesive preparations for dental use; adhesives for affixing dental prosthesis; adhesives for dental use; cements for use in dental technology; chemical preparations for dental use; chemical preparations for use in the cementing of cavities (dental); chemical products for dental purposes; chemical products for use in dental surgery; colouring reagents for detecting dental plaque; composite material for dental prosthesis; dental bonding material; dental cement for fillings; dental cements; dental ceramic frits; dental ceramic material; dental ceramics for the production of bridges; dental ceramics for the production of crowns; dental ceramics for the repair of crowns; dental composites; dental fillers; dental fissure sealants; dental health gum (medicated); dental lacquer; dental mastics; dental materials for stopping the teeth; dental polymers; dental preparations for disclosing plaque; dental preparations for the relief of toothache; dental repair materials; dental resins; dental restorative materials; dental rinses, medicated; dental sealants; dental stopping materials; dental varnishes for cavity lining of teeth; dental varnishes for sealing teeth; facing materials for use in dental surgery; materials for dental treatment; materials for making dental crowns; materials for making dental restorations; materials for use in the preparation of dental restorative work; medicated products for dental hygiene; medicines for dental purposes; tooth pastes in this class; pharmaceutical preparations containing fluoride for prevention of dental decay; plastics materials for use in making dental bridges; plastics materials for use in making dental crowns; porcelain crowns (dental); porcelain for dental prostheses; porcelain materials for making dental restorations; preparations for dental purposes (other than dentifrices); preparations for disclosing the presence of dental plaque; resins for dental purposes

Class 30: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; edible ices; sugar, honey, treacle, molasses; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice; sorbets; frozen yoghurt and all other yoghurt products in this class; ice cream; frozen confections, frozen desserts; desserts in this class; iced-coffee; dessert toppings; chocolate and chocolate based beverages; coffee based beverages; tea based beverages; puddings; pastries; biscuits; cookies; sundaes; profiteroles; snack foods in this class; cereals; candies, chewing gum; cereal based foods; beverages and preparations for making beverages in this class; herbal tea; preparations for making tea based beverages; frozen, prepared, or packaged hand-held meals consisting primarily of pasta or rice; multigrain-based snack foods; natural and low calorie sweeteners

Owner

Biodental Remin Ltd.

Trade Mark

ANTICAY

1. Biodental Remin Ltd (‘Opponent’) has opposed the application to remove the Trade Marks, filing Notices of Intention to Oppose removal on 25 October 2019 and Statements of Grounds and Particulars (‘SGP’) on 22 November 2019.  The Applicant filed Notices of Intention to Defend on 16 February 2020.

2. The Opponent subsequently filed Evidence in Support of its opposition to removal (‘EIS’), with the Applicant filing Evidence in Answer (‘EIA’) and the Opponent filing Evidence in Reply (‘EIR’), each of which is discussed in more detail below.  

3. The Opponent makes a broad claim for confidentiality over the entirety of information disclosed in the Bhindi Declaration and Gollant 2 (defined later in the decision) including information relating to the public use of the Trade Marks.  I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim (albeit in respect of a claim made by a then opponent) stated:

   The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.

   This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[1]

   [1] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6].

4. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  On 12 November 2020 the Applicant requested an oral hearing.  The matter was set down for a hearing in Canberra on 1 June 2021. I was allocated to decide the matter as a delegate of the Registrar of Trade Marks.  In line with usual practice, a letter was sent to the parties on 8 April 2021 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 18 May 2021 (‘Opponent’s Submissions’) and indicated that they would not be attending the hearing.  The Applicant filed written submissions on 25 May 2021 (‘Applicant’s Submissions’).  At the hearing Edward Thompson of Counsel represented the Applicant, appearing by video conference. 

5. On 26 May 2021, by letter, the Opponent sought to amend the SGP in order to particularise the ground of opposition to removal under s 100(3)(c), namely that there were obstacles to use of the Trade Mark. The Opponent submitted that the amendment should be granted because the facts supporting the particulars were set out in the EIS and were addressed in the Opponent’s Submissions and it was in the public interest that the correct determination of opposition proceedings is based on all arguable grounds of opposition. Regulation 9.14 of the Trade Marks Regulations 1995 (‘Regulations’) provides that an opponent may request the Registrar amend the SGP to amend or add facts or circumstances that form the basis of opposition to the removal and the Registrar may grant the request on terms the Registrar may consider appropriate.

6. The delegate in K-Tec Inc v Healthy Foods LLC[2] stated at 23 (albeit in respect of an application to amend under reg 5.12 instead of reg 9.14):

   The factors that will generally need to be taken into account in the exercise of the Registrar’s discretion to amend an SGP are the likely prejudice to the parties, the public interest, whether the ground proposed to be added is sufficiently particularised and the nature and importance of the requested amendment. In the present matter the timing of the amendment request and the reasonableness of the explanation offered for the delay in requesting the amendment are also relevant.

   [2] [2016] ATMO 4.

7. In the present case, the Opponent seeks to amend the SGP less than three business days prior to the oral hearing of the opposition to removal, after both parties have completed their evidence and filed their written submissions in this matter.  The prejudice to the Applicant and the public interest of having proceedings determined promptly is highly significant.  This amendment could and should have been made at the time the Opponent filed its EIS.  Noting that this decision does not affect the overall outcome of the matter I do not allow the amendment to the SGP.

8. I have based my decision on consideration of the following relevant material and the oral submissions made at the hearing on 1 June 2021:

   ·The Application for Removal;

   ·The Notice of Intention to Oppose and SGP;

   ·The Opponent’s EIS;

   ·The Applicant’s EIA;

   ·The Opponent’s EIR;

   ·The Opponent’s Submissions; and

   ·The Applicant’s Submissions. 

   The Relevant Legal Provisions

9. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 of the Act relevantly provides:

   92  Application for removal of trade mark from Register etc.

   (4)An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

   …

   (b)that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

   (i)used the trade mark in Australia; or

   (ii)used the trade mark in good faith in Australia;

   in relation to the goods and/or services to which the application relates.

   Note 1:For file and month see section 6.

   Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

10. Under s 92(4)(b) the relevant period during which the Opponent must establish use of each of the Trade Marks is the three year period ending on 26 July 2019 (‘relevant period’).  The use of the Trade Marks must be use by the registered owner or an authorised user in the relevant period. 

11. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the respective filing dates of the Trade Marks,[3] and I confirm that five years since filing the applications for each of the Trade Marks have in fact passed.

    [3] Per s 93(2) of the Act prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 as applies in the present matter. The updated s 93(2) of the Act applies to Trade Marks filed from 29 February 2019 onwards.

12. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 of the Act which provides, relevantly to this matter:

    100  Burden on opponent to establish use of trade mark etc.

    (1) In any proceedings relating to an opposed application, it is for the opponent to rebut:

    …
     (c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

    […]

    (3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

    (a) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or
     (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

    (i)  the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
    (ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or

    (c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

13. I proceed on the basis that the standard of proof is the ordinary civil standard being the balance of probabilities.[4] 

    [4] Pfizer Products Inc. v Karam [2006] FCA 1663 and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

14. In accordance with s 101, if the grounds for removal are established, the Registrar may decide to remove the Trade Marks from the Register for all or some of the goods identified in the Application for Removal, or if satisfied it is reasonable to do so, decide the Trade Marks should not be removed.

15. I further note that a single bona fide use of a trade mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b),[5] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, overwhelmingly convincing proof’.[6]

    [5] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17].

    [6] Nodoz Trade Mark (1962) RPC 1, 7.

    Opponent’s Evidence

16. The Opponent’s EIS consists of a declaration made on 18 May 2020 by Mathew Gollant, Principal of CJG Advisory, the appointed liquidator of the Opponent, with Exhibits MG-1 to Confidential Exhibit MG-4 (‘Gollant 1’).    

17. Gollant 1 conveys the following information:

    ·The Opponent was wound up in insolvency on 2 June 2017 and the Declarant was appointed liquidator on that day.  The Opponent is a dental technology company, specialising in the development of formulas and compounds for use in assisting dental hygiene practices.

    ·In 2009 the Applicant, then a related entity of the Opponent, adopted the Trade Marks to describe a calcium phosphate complex used for a wide range of dental goods (the ‘Complex’).  The rights in the Trade Marks were assigned to the Opponent in 2010. The Declarant understands that the Applicant is a shareholder in the Opponent.

    ·Prior to being placed in external administration in 2017, the Opponent had been manufacturing and supplying certain goods under and by reference to the Trade Marks including manufacturing and selling the Complex and licensing the Trade Marks overseas.

    ·The Opponent has included the Trade Marks as assets available for sale as part of its liquidation, evidencing a clear intention that the Trade Marks should be used by the purchaser of the Opponent’s assets.

    ·The Opponent entered into a license agreement with Oral Therapeutics India Limited and Abbot Healthcare Private Limited in December 2012 for the licensing of the Trade Marks in connection with the sale or distribution of products in India.  The Opponent has sold products bearing the Trade Marks to customers in India.  However the Opponent has made no sale of products bearing the Trade Marks in the relevant period.

    ·The Opponent’s ability to use the Trade Marks has been hampered by the Opponent being under external administration since 2 June 2017 and the Declarant requests that the Registrar exercise its discretion to allow the Trade Marks to remain on the Register to preserve the assets of the Opponent for sale to benefit the Opponent’s creditors.

1. Gollant 1 contains as Confidential Exhibit MG-4, three invoices (of which one is in the relevant period) for the sale of what is described as ‘anticay powder’ (which I assume is the Complex) to India.  There is no documentary evidence of any licence agreement with third parties, and no evidence of sales or advertising of any product under the Trade Marks in Australia.   

2. The Opponent’s EIR consists of a declaration made on 21 October 2020 by Mathew Gollant with Exhibits MG-5 to Confidential Exhibit MG-7 (‘Gollant 2’) and a declaration by Dr Tushaan Bhindi, Director of Better Teeth Co Pty Ltd (an early investor in the Opponent) made on 21 October 2020 (‘Bhindi Declaration’).    

3. Gollant 2 conveys the following information:

   ·There were sales of toothpaste made by Abbot Healthcare Private Limited to dentists in Australia during the relevant period which included the Trade Marks on their packaging.

   ·The Opponent was placed into external administration (receivership) in February 2015.

   ·The Opponent denies that the invoices provided in Confidential Exhibit MG-4 were modified in some form.

   ·The Opponent’s administrators have since 2015 requested that Timothy Erskine-Smith co-operate with them by providing samples of the Anticay complex to enable the Opponent to continue to sell the Complex, however Mr Erskine-Smith has refused to co-operate and this has prevented use by the Opponent of the Trade Marks or any further production of the Complex.

4. I note that Gollant 2 does not contain any documentary evidence of the sale of toothpaste made by Abbot Healthcare Private Limited, and the photo of the packaging of the toothpaste is sufficiently poor that I am unable to identify any use of the Trade Marks on the packaging.   The Opponent does attach a copy of the licence agreement between itself and Abbot Healthcare Private Limited which licenses the use of the Trade Marks by the licensee in India, Nepal and Sri Lanka only.  Gollant 2 also contains, as an annexure, a spreadsheet said to summarise sales of the Anticay compound to Group Pharmaceutical Ltd, company based in India.  All of these sales are before the relevant period.

5. The Bhindi Declaration conveys the following information:

   ·During the relevant period Group Pharmaceuticals Pty Ltd and Abbot Healthcare Private Limited had toothpaste products (Enifax) which include the Anticay complex and the Trade Marks (on the packaging) in India.

   ·During the relevant period the Declarant had secured interest from dentist and retail customers in Australia who wished to purchase Enifax and had entered into a verbal agreement with the Opponent to supply the Declarant with the Anticay product.  However because the Opponent was in liquidation, the only person who could verify the quality of the Anticay product was Timothy Erskine-Smith.

   ·In July 2020 the Declarant entered into an agreement with the Opponent to purchase all the assets and use the Trade Marks however the process has been delayed due to Covid.  

6. The Bhindi Declaration contains no documentary materials supporting the claims set out above.  

   Applicant’s Evidence

7. The Applicant’s evidence in this matter consists of two declarations made on 18 August 2020 by Timothy Erskine-Smith, the Managing Director of the Applicant (‘Smith 1’ and ‘Smith 2’ respectively).  Smith 1 also annexes documents marked BDI-1 to BDI-14 while Smith 2 annexes a document marked as BDI-15 and BDI-16.  I note that BDI-15 is the document marked Confidential Exhibit MG-4 to Gollant 1 and I will treat this document as confidential.   

8. Smith 1 and Smith 2 convey the following information:

   ·The Opponent was created in 2009 by the directors of the Applicant to access investor finding for the production of the Anticay compound and hold certain assets.  The Anticay compound was originally coined and registered by CSR Ltd, who manufactured the compound in the 1970s.

   ·The Opponent has only used the Trade Marks to describe the anticay Complex which it has manufactured on a small scale.  It ceased manufacturing in September 2014.  It has never used the Trade Marks for the goods for which trade mark 1316708 is registered for.  Furthermore its only rights to the Trade Marks were pursuant to an agreement with the Applicant which provided for a reversion of rights to the Trade Marks in the event of termination of that agreement, which occurred in September 2014. 

   ·Any Anticay Complex sold to companies after 2014 was material that was the property of third party companies and in any event was sold outside Australia.

   ·Each of the invoices Annexed to Confidential Exhibit MG-4 to Gollant 1 appears to have been modified by the removal of material from the top-left corner and the invoices are unsigned.  Furthermore the invoices are anticay powder which is a raw material excipient for the manufacturing of toothpaste and hence it does not fall within the Registered Goods.

   Discussion

9. To successfully oppose the Application for Removal the Opponent must establish, pursuant to s 100 of the Act, that it has used the Trade Marks in the relevant period or that there was an obstacle to use in that period. Use of the Trade Marks by an authorised user is taken to be use of the Trade Marks by the Opponent.[7] 

   [7] s 7(3) of the Act.

10. In the event that the Opponent fails to establish such use, the Registrar may exercise its discretion under s 101(3) to decide that the Trade Marks should not be removed from the Register.

    Use of the Trade Marks in the relevant period

11. Having reviewed the EIS, I am not satisfied that there has been any use of the Trade Marks in Australia by the Opponent for the Registered Goods in the relevant period.  There is no evidence of any licence agreement in the relevant period with an entity in Australia.  There is no evidence of any marketing of a product featuring the use of the Trade Marks in Australia (any use in India on goods produced in India being irrelevant to my consideration).  This may well be expected; the Opponent was under external administration for the entirety of the relevant period.

12. The evidence of the Opponent, taken at its highest, consists of a single invoice of sale to a company in India of what is referred to as ‘anticay powder’ (described as ‘raw material excipient for the manufacturing of toothpaste’).  I note that if single act of use is relied upon then it should be established by ‘if not conclusive proof, overwhelmingly convincing proof’.[8]  In the present case I am not satisfied that the single invoice for the sale of raw material (apparently known as anticay powder) to India is sufficient proof especially since the Opponent acknowledges that the material may well have been owned by parties other than the Opponent.  Furthermore there is a legitimate question as to whether the sale was made by the Opponent, or by a Mr Stephen Pratt, a lawyer in Coffs Harbour appointed as the ‘stakeholder’ in the Opponent in 2015 (and the individual holding the anticay power); the invoice provided states that it is ‘from Stephen Pratt’ and signed by Mr Pratt.

    [8] Nodoz Trade Mark (1962) RPC 1, 7.

13. The Opponent submits that the offering for sale of toothpaste produced by a third party in Australia bearing the Trade Marks is evidence of use in Australia.  I am not satisfied by the evidence before me that the sales occurred, the toothpaste actually bore the Trade Marks, that if it did it bear the word ‘anticay’ that the word was acting as a trade mark (as opposed to an indication of an ingredient) or that its use was use by (or authorised by) the Opponent.  Furthermore the claim that the toothpaste was sold in Australia during the relevant period is unsupported by documentary materials.

14. The burden of proof to show use of a trade mark falls squarely on the shoulders of an opponent for the simple reason that, in most cases, were an opponent actively using the mark it should be relatively easy to provide evidence demonstrating use.  If the Opponent was actively using the Trade Marks, one would expect to see evidence of extensive use of the Trade Marks in correspondence, multiple invoices, products, technical documents and receipts. The sum total of the Opponent’s evidence of use is a single invoice directed at an Indian company that does not clearly set out what goods are being provided under the Trade Marks and unsupported assertions of sales by third parties or agreements to potentially use the Trade Marks.  The Opponent’s evidence has fallen well short of demonstrating that the Opponent used the Trade Marks during the relevant period.

    Obstacles to use

    33. The Opponent in its evidence (and submissions) raises matters which could be regarded as obstacles to use of the Trade Marks in the relevant period, pursuant to s 100(3)(c) of the Act. However the SGP does not explicitly identify s 100(3)(c) as a separate basis for opposing removal of the Trade Marks nor does it identify the particular obstacles to use.

15. Given the absence of appropriate particulars I do not consider it appropriate to consider matters relevant to s 100(3)(c) of the Act. When particularising the basis for opposition for removal, it is necessary to particularise that basis, whether it is under s 100(3)(c) or as an exercise of discretion. The purpose of a SGP in such a case is to place a removal applicant on notice that the opponent is seeking to rely on s 100(3)(c) of the Act. This was not done by the SGP as filed in this proceeding.

16. Even if I were to consider whether the Opponent faced circumstances that amounted to an obstacle to use within s 100(3)(c), the EIS does not establish that such circumstances exist. The Opponent’s purported obstacles relate to the non-cooperation by Mr Erskine-Smith and the fact that the Opponent was in external administration for the relevant period. I am unsatisfied, on the basis of the evidence before me, that the Opponent’s failure to use the Trade Marks in Australia was caused by these obstacles; it is not explained why the Opponent could not have made sales under administration or engaged other individuals to provide the assistance that Mr Erskine-Smith was unwilling to provide.[9] 

    [9] As required under s 100(3)(c) of the Act, see Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [55].

17. It is therefore necessary to consider whether the Registrar should exercise her discretion to allow the Trade Marks to remain on the Register.

    Registrar’s Discretion

18. As noted in Shanahan’s Australian Law of Trade Marks and Passing Off the policy of the Act is to facilitate the removal of an unused trade mark, and the public interest of the integrity of the Register will generally demand the removal of an unused trade mark.[10] However, as indicated at paragraph Error! Reference source not found., above, s 101(3) provides the Registrar with a discretion, which, in the words of Bennett J, is:

    a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court [or Registrar] is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.[11]

    Her Honour also noted:

    By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. …

    There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account.[12]

    [10] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2016 Thomson Reuters, [70.2505].

    [11] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [167].

    [12] Ibid [171]-[172].

19. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited Flick J stated:

    Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[13] the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register.[14] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[15]

    [13] Kowa Co Ltd v Organon [2005] FCA 1282, [92].

    [14] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

    [15] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210].

20. Factors that have been found relevant to the consideration of whether to exercise the discretion include:

    ·There had been no abandonment of the trade mark;

    ·The registered proprietor of the mark still had a residual reputation in the mark;

    ·There had been sales by the registered proprietor of goods for which removal was sought since the relevant period ended;

    ·The applicant for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark;

    ·The registered proprietor was not aware of the applicant’s sales under the mark.[16]

    [16] Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135 at [169] citing E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 1005 [202]-[203].

21. In the present case there is very little evidence of use of the Trade Marks before or after the relevant period in Australia.  There is no evidence of reputation in the Trade Marks in Australia and I am entirely unpersuaded that the evidence of very limited use of the Trade Marks outside Australia provides a basis to allow the Trade Marks to remain on the Register.  The Opponent makes various submissions that consumer confusion will arise if the Trade Marks are removed from the Register; on the evidence before me there is no existing reputation in the Trade Marks of any significance and no realistic prospect of confusion will arise.

22. The Opponent submitted that I should exercise the discretion not to remove the Trade Marks in order to preserve the value of the assets of the Opponent’s company which are to be sold to third parties.  This private commercial interest of the Opponent and Dr Bhindi does not outweigh the public interest of the integrity of the Register (or whatever interest the Applicant may have in this outcome).  The Opponent also raises as a basis to exercise the discretion the conduct of Mr Erskine-Smith in refusing to provide assistance to the Opponent during the external management process.  I have not been provided any reason why Mr Erskine-Smith was under any obligation to assist the Opponent during the external administrative process, nor why this is a relevant factor in the exercise of the discretion.

23. Given the matters considered above I consider that this is not an appropriate case to exercise the Registrar’s discretion to allow the Trade Marks to remain registered in respect of goods for which they have not been used on or in relation to during the relevant period.

    Decision

24. I decide that the Opponent has not established its opposition to removal and the Trade Marks should be removed from the Register in respect of all goods for which they are registered.

25. Accordingly, I direct that registrations 1316708 and 1642434 be removed from the Register one month from the date of this decision.  If the Registrar is served with a notice of appeal before then I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registrations be dealt with as the Court sees fit.

    Costs

26. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs in respect of trade mark number 1316708 against the Opponent under s 221 of the Act in the relevant amounts under Schedule 8 of the Regulations. In respect of trade mark number 1642434 I award reduced costs against the Opponent in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[17] 

    [17] [2001] ATMO 78.

    Nicholas Smith
    Hearing Officer
    Hearings and Oppositions
    27 July 2021